According to the UPC Preparatory team the Unified Patent Court (UPC) and as a consequence also the Unitary Patent (UP) are expected to start on April 1, 2023. At its start, the UP and UPC will cover the territory of 17 EU countries: Austria (AT), Belgium (BE), Bulgaria (BG), Denmark (DK), Estonia (EE), Finland (FI), France (FR), Germany (DE), Italy (IT), Latvia (LV), Lithuania (LT), Luxembourg (LU), Malta (MT), the Netherlands (NL), Portugal (PT), Slovenia (SI) and Sweden (SE). For reasons of brevity, we refer to the collection of these 17 states as the ‘UP space’.
What decisions do you need to take at this moment for your
- already granted EP patents classically validated in at least one ‘UP space’ state,
- pending EP patent Applications
- EP patents (applications) you are considering to license out, and
- European (EP) or Euro-PCT applications in preparation?
ACTIONS FOR ALREADY GRANTED “CLASSIC” EUROPEAN (EP) PATENTS
Eventually, the Unified Patent Court (UPC) will be exclusively competent for disputes concerning the infringement or revocation of “classic” EP patents validated in the ‘UP space’ countries. However, during a transitional period of seven years, which may be prolonged by up to a further seven years, an infringement or revocation action may be brought before national courts or before the UPC.
Patent proprietors wishing to avoid the risk of central revocation of their “classic” EP patents by the UPC for all ‘UP-space’ states can opt-out any of their granted EP patents and supplementary protection certificates (SPCs) from the UPC’s exclusive competence during the transitional period - unless an action has already been brought before the UPC. The opt-out will stay in place for the whole lifetime of the patent or SPC. Disputes in respect of opted-out patents or SPCs will then be heard by national courts only. Attractively for proprietors, an opt-out may be later withdrawn, allowing an infringement action to be initiated before the UPC. Such a withdrawal is possible only if no action relating to the patent has been commenced before a national court yet – therefore, if an adversary acts first before a national court, the proprietor’s path for centralized enforcement before the UPC will be foreclosed. Moreover, the withdrawal of an opt-out is final, i.e., it will not be possible to file a second opt-out for the same patent.
To prevent that patent proprietors are exposed to a wave of revocation suits before the UPC on the first day of the UPC’s operation, a sunrise period expected to start on January 1, 2023 will be provided to allow opt-out requests to be filed already before the UP system starts. Therefore, if you desire to opt-out one or more of your granted patents, you should consider to do so during the sunrise period.
Applications for opt-out are lodged electronically with the UPC Registry, by all actual proprietors of the patent in all EPC states. If these proprietors differ from those currently recorded in national patent registers, a declaration will be needed that the former are entitled to be recorded in the national patent registers.
If supplementary protection certificate(s) (SPC) have already been granted based on the patent, the SPC holder(s) – if different from the patent proprietors – must apply for the opt-out together with the proprietors. Contrarily, an earlier opt-out of the patent automatically extends to its later issued SPCs.
You should also check your licensing contracts to evaluate to what extent your licensees may need to be consulted on, or may even control, the decision to request an opt-out for the licensed patent.
The application for opt-out must contain the names and addresses of the proprietors of the patent and of any SPC holders. The application may be lodged by a representative appointed by the proprietors. This includes European Patent Attorneys who have obtained appropriate qualifications to represent parties before the UPC. If the application is lodged by a person other than the proprietor(s) or a representative, a mandate to do so will be necessary. The opt-out will be effective as from the date of its entry in the UPC register.
We at De Clercq & Partners can assist you to lodge applications for opt-out.
ACTIONS FOR PENDING EUROPEAN (EP) PATENT APPLICATIONS
I want unitary protection. How do I ensure that this is available for my application?
Unitary patent protection may be requested for any EP patent granted on or after the day when the UP system starts, i.e., presumably, on or after April 1, 2023. Unitary effect will not be available for patents granted before this date. Unitary effect will also not be available for patents granted on or after this date, but which do not contain the same claims for all 25 EU states that participated in the process leading to the creation of the UP system (i.e., all EU states except Spain and Croatia). This should be a small minority of patents.
Unitary patent protection will thus be an option for virtually every currently pending EP application, once it has been granted, and you need to consider and decide for which of your pending patent applications you will eventually desire unitary protection, as opposed to “classic” validation in one or more countries of the ‘UP space’. Individual validations will of course remain necessary for countries outside of the ‘UP space’.
The situation will be relatively simple for pending EP applications for which the Intention to Grant (Rule 71(3) EPC) communication has not yet been received. These applications are likely to proceed to grant only after April 1, 2023, when unitary effect can be requested for them post-grant. No UP-motivated action is presently required for these applications.
The situation is more complicated for pending EP applications for which the Intention to Grant (Rule 71(3) EPC) communication has already been received, or will be received in relatively near future. Because the 4-month period to reply to this communication will then expire before April 1, 2023, an applicant who would timely comply with all pre-grant formalities runs the risk of a patent grant prior to April 1, 2023, which would render unitary protection unavailable for that granted patent.
Therefore, if you desire unitary protection for a pending EP patent application for which Intention to Grant (Rule 71(3) EPC) communication has already been received, certain steps may need to be taken to delay grant until after April 1, 2023.
If the deadline to respond to the Intention to Grant (Rule 71(3) EPC) communication is before January 1, 2023, an appropriate action may be to request minor reasoned amendments to the allowed text of the patent. This will prompt the issuance of a new Rule 71(3) EPC communication with a new 4-month period to reply, pushing the deadline well past January 1, 2023, and potentially even past the UP system start on April 1, 2023.
If the deadline to respond to the Intention to Grant (Rule 71(3) EPC) communication is after January 1, 2023, the EPO provides transitional measures as from January 1, 2023, allowing applicants to request delay of grant until the UP system starts, and provide the possibility to make an early request for unitary effect registration.
The above considerations are illustrated in the flowchart below:
* UP-space states: Currently Austria (AT), Belgium (BE), Bulgaria (BG), Denmark (DK), Estonia (EE), Finland (FI), France (FR), Germany (DE), Italy (IT), Latvia (LV), Lithuania (LT), Luxembourg (LU), Malta (MT), the Netherlands (NL), Portugal (PT), Sweden (SE), Slovenia (SI)
We at De Clercq & Partners can assist you with the process of obtaining unitary protection for your future granted EP patents.
I do not want unitary protection. Do I need to do anything?
If you do not desire unitary protection, but only wish for a “classic” EP patent, then your application can be prosecuted to grant and afterwards validated in individual ‘UP-space’ EPC states (alongside any desired non-‘UP space’ EPC states). This corresponds to the current procedure, which, if you have previously obtained a patent grant in Europe, you will be familiar with.
However, if you also wish to prevent that the granted “classic” EP patent falls within the competence of the Unified Patent Court (UPC), you may wish to opt-out the pending application prior to grant from the exclusive competence of the UPC. Even though opting-out is also possible after grant, this entails the risk that a third party files a central revocation action at the UPC before you request the opt-out or before the opt-out becomes effective. You will find practical considerations concerning such opt-outs in the previous section.
One possible moment to consider your preferences and request an opt-out could be at the pre-grant (Rule 71(3) EPC communication) stage, but in any event one must act before the end of the 7 (+7) year transitional period which allows to request an opt-out ends. While the end of the transitional period is not a pressing concern now, it will become an important consideration as we approach April 1, 2030 (or April 1, 2037).
ACTIONS FOR EP OR EURO-PCT PATENT (APPLICATIONS) YOU ARE CONSIDERING TO LICENSE OUT
Your new licensing agreements may concern pending EP applications for which a decision whether to request UP or “classic” EP validations will be needed post-grant, and/or granted EP patents or pending EP applications for which the decision on an opt-out from UPC competence (of withdrawal of the opt-out) will be needed. You need to consider to what extent the (exclusive) licensee should be given the power to influence or control these decisions.
Further, according to the UPC agreement, exclusive licensees are entitled to bring actions before the UPC even without the consent of the patent proprietor (only prior notice to the proprietor is required), unless the licensing agreement provides otherwise. You need to consider whether this is acceptable for you as the patent proprietor, and if not, provide for alternative arrangements in the licensing agreement.
Our legal counsels at De Clercq & Partners can assist you with analysing these issues and drafting corresponding contract clauses.
ACTIONS FOR EP, EURO-PCT APPLICATIONS IN PREPARATION
Because unitary protection is requested after the grant of an EP patent, you may be tempted to pay no attention to this issue when preparing a new patent application. There are, however, important questions to consider already at early stage.
First, because ownership of a Unitary Patent can only be transferred in respect of all ‘UP-space’ countries, such transfer must be governed by a single legal framework. When there are two or more co-applicants, this will be the national law of the country of residence or principal place of business of the co-applicant mentioned first (insofar this place is in the ‘UP-space’). For example, if the residence of your organisation is in Belgium – which is a ‘UP-space’ country – and you prefer the transfer of ownership of your later UP patent to be governed by Belgian law, you may want ensure that you are mentioned first in the list of co-applicants when the application is filed, so that in the granted patent you will be mentioned as first in the list of co-patentees.
Second, because the decision whether to request a Unitary Patent or a “classic” EP patent, and the decision whether to opt-out such “classic” EP patent from UPC competence (see below) will need to be taken at a later date, you may want to agree with your co-applicants already at an early stage on how (by whom) these decision will be made.
The above explanations are for information purposes only and must not be taken as a definitive statement of the law or practice. Please also check out our general information under The Unitary Patent and The Unified Patent Court or send an email to email@example.com.